Case 1:19-cv-11586-FDS Document 373 Filed 04/13/22 Page 1 of 17
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`PHILIPS NORTH AMERICA LLC,
`
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`Plaintiff,
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`v.
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`FITBIT LLC,
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`
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`Defendant.
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`
`
`
`Civil Action No. 1:19-cv-11586-FDS
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`FITBIT’S REPLY IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT OF
`NONINFRINGEMENT OF U.S. PATENT NO. 8,277,377 BASED ON PLAINTIFF’S
`FAILURE OF PROOF (DKT. 331)
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`

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`Case 1:19-cv-11586-FDS Document 373 Filed 04/13/22 Page 2 of 17
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`TABLE OF CONTENTS
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`Pages
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`INTRODUCTION ...............................................................................................................1
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`THE FUJITSU, E-PASS, AND ACCO BRANDS CASES ARE ANALOGOUS,
`PHILIPS’ CITED CASES ARE NOT .................................................................................1
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`A.
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`B.
`
`Philips’ Attempts To Distinguish Fitbit’s Cases Fall Short .....................................2
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`Philips’ Cited Cases Are Distinguishable And Inapposite ......................................3
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`FITBIT IS ENTITLED TO SUMMARY JUDGMENT OF
`NONINFRINGEMENT BECAUSE THE EIGHT FITBIT WEARABLES DO
`NOT NECESSARILY INFRINGE AND PHILIPS HAS NOT PROVIDED
`SUFFICIENT EVIDENCE OF SPECIFIC INSTANCES OF INFRINGEMENT..............5
`
`A.
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`Philips Does Not Dispute That The Eight Fitbit Wearables Do Not
`Necessarily Infringe .................................................................................................6
`
`B.
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`Philips Does Not Provide Adequate Evidence Of Direct Infringement ..................7
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`1.
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`2.
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`Philips’ Evidence Does Not Show That Fitbit Instructs Users To
`Perform Dr. Martin’s Steps 1-4 In The Required Order ..............................7
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`Philips’ Evidence Does Not Show That Any Fitbit User Has
`Performed Dr. Martin’s Steps 1-4 In The Required Order ........................10
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`PHILIPS DID NOT PRESERVE THE ALLEGATION THAT FITBIT
`DIRECTLY INFRINGES VIA TESTING, AND CANNOT DEFEAT
`SUMMARY JUDGMENT WITH THIS NEW THEORY ................................................12
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`CONCLUSION ..................................................................................................................12
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`I.
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`II.
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`III.
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`IV.
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`V.
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`
`i
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`Case 1:19-cv-11586-FDS Document 373 Filed 04/13/22 Page 3 of 17
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`TABLE OF AUTHORITIES
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`Pages
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`Cases
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`Abiomed v. Maquet Cardiovascular,
` 2021 WL 4477432 (D. Mass. Sept. 30, 2021) ................................................................. 12
`
`ACCO Brands, Inc. v. ABA Locks Mfr. Co.,
`501 F.3d 1307 (Fed. Cir. 2007).................................................................................. passim
`
`Convolve, Inc. v. Compaq Comp. Corp.,
` 527 Fed.App’x. 910 (Fed. Cir. 2013)................................................................................. 3
`
`DUSA Pharms., Inc. v. Biofrontera Inc.,
`495 F.Supp.3d 21 (D. Mass 2020) ...................................................................................... 3
`
`Dynacore Holdings Corp. v. U.S. Philips Corp.,
` 363 F.3d 1263 (Fed. Cir. 2004).......................................................................................... 5
`
`E-Pass Techs., Inc. v. 3Com Corp.,
`473 F.3d 1213 (Fed. Cir. 2007).................................................................................. passim
`
`Fujitsu Ltd. v. Netgear Inc.,
` 620 F.3d 1321 (Fed. Cir. 2010)................................................................................. passim
`
`Intel Corp. v. ITC,
` 946 F.2d 821 (Fed. Cir. 1991)............................................................................................ 5
`
`Lucent Techs., Inc. v. Gateway, Inc.,
`580 F.3d 1301 (Fed. Cir. 2009)................................................................................... 2, 3, 5
`
`Moleculon Res. Corp. v. CBS, Inc.,
`793 F.2d 1261 (Fed. Cir. 1986)............................................................................... 2, 3, 5, 8
`
`Parallel Networks Licensing, LLC v. Microsoft Corp.,
`777 F.App’x 489 (Fed. Cir. 2019) ...................................................................................... 3
`
`Pernix Ir. Pain DAC v. Alvogen Malta Operations, Ltd.,
` No. 16-139-WCB, 2018 WL 2225113, 2018 U.S. Dist. LEXIS 81419(D. Del.
`May 15, 2018) ................................................................................................................... 12
`
`Toshiba Corp. v. Imation Corp.,
` 681 F.3d 1358 (Fed. Cir. 2012).............................................................................. 2, 3, 4, 5
`
`
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`
`ii
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`Case 1:19-cv-11586-FDS Document 373 Filed 04/13/22 Page 4 of 17
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`I.
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`INTRODUCTION
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`Philips’ Opposition (Dkt. 363) rests on the idea that the cases Fitbit relies upon are
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`inapposite, and other cases that Philips relies upon are more on-point. But Philips does not even
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`attempt to undermine the relevant legal test—namely, that to prove direct infringement, a patentee
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`must either point to specific instances of direct infringement or show that the accused device
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`necessarily infringes. Further, Philips does not dispute Fitbit’s statements of material fact, so it is
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`undisputed that the eight Fitbit wearables do not necessarily infringe. Thus, the only outstanding
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`question that the Court must decide is whether Philips provided adequate, potentially admissible
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`evidence of specific instances of direct infringement.
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`In that regard, Philips again does not contradict the relevant legal test—where the evidence
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`shows, at best, that Fitbit taught its customers each alleged step of the claimed method in isolation,
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`but does not teach all of the steps of the claimed method together, in the required order, it requires
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`too speculative a leap to conclude that any Fitbit customer actually performed the claimed method.
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`Nonetheless, Philips exclusively presents evidence that allegedly shows Fitbit teaching, or Fitbit
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`users performing, individual elements of ’377 patent claim 1 in isolation. None of Philips’
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`evidence shows Fitbit teaching, or a Fitbit user performing, all of the elements of claim 1 in the
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`required order as the legal test demands, despite Philips’ mischaracterizations to the contrary.
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`Philips has not presented evidence from which a reasonable juror could find infringement,
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`and thus, summary judgment of noninfringement for the eight Fitbit wearables1 is appropriate.
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`II.
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`THE FUJITSU, E-PASS, AND ACCO BRANDS CASES ARE ANALOGOUS,
`PHILIPS’ CITED CASES ARE NOT
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`Fitbit’s opening brief explained why the Fujitsu, E-Pass, and ACCO Brands cases are
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`analogous to the facts here and compel summary judgment of noninfringement. (See generally
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`1 The eight Fitbit wearables are defined in Fitbit’s opening brief. (Dkt. 332 at 1 n.1.)
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`Case 1:19-cv-11586-FDS Document 373 Filed 04/13/22 Page 5 of 17
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`Dkt. 332 (discussing Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321 (Fed. Cir. 2010); ACCO Brands,
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`Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307 (Fed. Cir. 2007); E-Pass Techs., Inc. v. 3Com Corp.,
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`473 F.3d 1213 (Fed. Cir. 2007)); see also Dkt. 3642 at 10-18.) Philips claims that three other cases
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`are closer to the facts here. (See Dkt. 363 at 2-4 (discussing Toshiba Corp. v. Imation Corp., 681
`
`F.3d 1358 (Fed. Cir. 2012); Moleculon Res. Corp. v. CBS, Inc., 793 F.2d 1261 (Fed. Cir. 1986);
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`Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1317 (Fed. Cir. 2009)).) Philips’ attempts to
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`distinguish Fujitsu, E-Pass, and ACCO Brands miss the mark, and Philips ignores key distinctions
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`of Toshiba, Lucent, and Moleculon that render them inapplicable here.
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`A.
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`Philips’ Attempts To Distinguish Fitbit’s Cases Fall Short
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`Philips’ attempts to distinguish Fitbit’s cases are misleading and irrelevant.
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`For example, Philips’ attempts to distinguish E-Pass find no support in the opinion itself.
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`First, Philips claims that the Lucent court (not the E-Pass court) noted that in E-Pass, “the patentees
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`failed to introduce circumstantial evidence of infringing acts.” (Dkt. 363 at 10.) But that does not
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`mean the patentee did not introduce any circumstantial evidence. Instead, the E-Pass opinion
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`describes the various circumstantial evidence introduced by the patentee, most notably “a set of
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`excerpts from the product manuals for various of the accused devices,” E-Pass, 473 F.3d at 1213,
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`much like what Philips relies on here. Philips also wrongly claims that “the main analysis provided
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`by E-Pass” is whether users perform the claim steps “out of order.” (Dkt. 363 at 11.) But the E-
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`Pass opinion never indicates that its noninfringement finding was based on whether users could
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`perform the claim steps “out of order.” See generally 473 F.3d 1213. The crux of the summary
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`judgment of noninfringement in E-Pass was that, like Philips here, the patentee did not introduce
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`2 Philips’ opposition extensively cross-cites the documents supporting its own motion for summary
`judgment (i.e., Dkt. 340, 341, 342). Thus, Fitbit similarly cites its opposition to Philips’ motion
`for summary judgment and supporting documents herein (i.e., Dkt. 364, 365, 367).
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`2
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`Case 1:19-cv-11586-FDS Document 373 Filed 04/13/22 Page 6 of 17
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`a single piece of evidence—direct or circumstantial—teaching, or showing that any user
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`performed, all of the steps of the claimed method together in the required order. Id. at 1222.3
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`Similarly, Philips’ attempt to distinguish ACCO fails to mention the evidence of a “set of
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`instructions…that described the infringing method.” 501 F.3d at 1312. (See Dkt. 363 at 10-11.)
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`Finally, Philips’ attempts to distinguish Fujitsu are also unavailing. Philips argues that
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`“Fujitsu is also distinguishable as the Federal Circuit has twice declined to extend Fujitsu beyond
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`cases in which ‘the infringing option [is] disabled by default’.” (Dkt. 363 at 11 (citing Toshiba,
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`681 F.3d 1358, 1365; Convolve, Inc. v. Compaq Comp. Corp., 527 Fed.App’x. 910, 929 (Fed. Cir.
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`2013) (unpublished and nonprecedential).) But in other, more recent cases, the Federal Circuit
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`and courts in this District have applied Fujitsu to fact patterns in which there was no indication
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`that the accused option was disabled by default. See, e.g., Parallel Networks Licensing, LLC v.
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`Microsoft Corp., 777 F.App’x 489, 494 (Fed. Cir. 2019) (unpublished and nonprecedential)
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`(affirming summary judgment of no indirect infringement based on no underlying act of direct
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`infringement); DUSA Pharms., Inc. v. Biofrontera Inc., 495 F.Supp.3d 21, 35 (D. Mass 2020)
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`(Stearns, J.) (denying summary judgment that certain claim limitations are infringed).
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`Thus, as explained in Fitbit’s opening brief, these cases control. (Dkt. 332 at 6-10.)
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`B.
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`Philips’ Cited Cases Are Distinguishable And Inapposite
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`By contrast, Philips’ cited cases—Toshiba, Lucent, and Moleculon—are inapposite.
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`Toshiba involved accused devices that did not necessarily infringe—they could be used in
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`the infringing disc-at-once mode or the non-infringing multisession mode. 681 F.3d at 1364. The
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`circumstantial evidence there showed that the alleged infringer instructed its users not to use the
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`3 While not dispositive, Philips is also incorrect that Fitbit’s users could not perform Dr. Martin’s
`steps out of order. (Dkt. 363 at 11.) For example, a Fitbit user could sync data when they are not
`exercising and then open their Cardio Fitness Score page to view their Cardio Fitness Score/Level
`(Dr. Martin’s step 4), without ever syncing data during exercise (Dr. Martin’s step 3).
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`3
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`Case 1:19-cv-11586-FDS Document 373 Filed 04/13/22 Page 7 of 17
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`allegedly noninfringing method so the DVD at issue would comply with industry standards, id.,
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`along with the following, all of which supported denying summary judgment of noninfringement:
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` “[W]hen the disc-at-once mode is used, the DVD necessarily infringes.” Id.
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` The multisession mode, which did not finalize a DVD, “is contrary to Appellees’
`instructions to users that they must finalize the DVDs to ensure compatibility.” Id. at 1365.
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` “Some materials even recommended against using multisession mode—which allows a
`user not to finalize the DVD—stating, ‘For the best compatibility with Data [DVDs], do
`not use the multisession option.’” Id.
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` “Appellees also designed the DVDs to comply with [industry] standards, which provide
`that a DVD ‘shall’ be divided into three areas: a lead-in area, a data area, and a lead-out
`area. The lead-out area is only written when the disc is finalized or written in the
`[infringing] disc-at-once mode. The purpose of the DVD standards is to provide
`compatibility among various disc drives, which requires using the disc-at-once mode or
`finalizing the DVDs.” Id. (internal citation omitted).
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`None of these facts are applicable here.
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`First, Philips has not show that any particular mode of operation necessarily infringes like
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`the disc-at-once mode in Toshiba. As described in Fitbit’s opening brief and below, a user can
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`perform Dr. Martin’s steps 1-4 and still avoid alleged infringement by using a tablet or PC, or even
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`avoid alleged infringement while using a smartphone by, for example, not syncing data during
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`exercise, not syncing data over a wireless network, or not opening their Cardio Fitness Score page.
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`(Dkt. 332 at 11-20; see also Dkt. 364 at 14-18.) Second, Philips has not shown that Fitbit
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`discourages use of the non-infringing modes of operation like the accused infringer in Toshiba. In
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`fact, Fitbit instructs users that the Fitbit app may be downloaded onto a smartphone, tablet, and/or
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`Windows 10 PC, and Fitbit’s manuals express no preference for one over the others. (Dkt. 332,
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`SUF ¶ 20; Dkt. 367, RSUF ¶¶ 1, 9.) Fitbit also instructs users that their Cardio Fitness Score/Level
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`may be viewed on the face of certain Fitbit devices. (Dkt. 338-11 at 16599 (“Can I see my cardio
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`fitness score or level on my Fitbit device?”).) Third, Philips does not point to any industry
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`standards that require infringement, like those in Toshiba. Therefore, Toshiba is inapposite.
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`4
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`Case 1:19-cv-11586-FDS Document 373 Filed 04/13/22 Page 8 of 17
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`Moleculon involved evidence of two instruction sets both showing users how to perform
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`the entire infringing method, no contrary instructions teaching or suggesting a non-infringing use,
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`and extensive sales. 793 F.2d at 1272. Further, while the Court did not explicitly say so,
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`comparison of the accused Rubik’s Cube game with the asserted method claims 3-5 suggests that
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`the game necessarily infringed in Moleculon. See id. at 1263-64 (excerpting asserted claims).
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`Lucent similarly involved circumstantial evidence of instruction manuals teaching the entire
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`infringing method and extensive sales. 580 F.3d at 1318. These facts are also inapplicable.
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`First, as described in Fitbit’s opening brief and below, Philips has not pointed to a single
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`set of instructions from Fitbit that teaches a user to perform all of Dr. Martin’s steps 1-4 in the
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`required order like those in Moleculon and Lucent. Second, Fitbit has pointed to instructions that
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`teach noninfringing methods, while such instructions did not exist in Moleculon and Lucent. (Dkt.
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`332, SUF ¶ 20 (undisputed); Dkt. 367, ¶¶ 1, 9.) Thus, Moleculon and Lucent are also inapposite.
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`III.
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`FITBIT IS ENTITLED TO SUMMARY JUDGMENT OF NONINFRINGEMENT
`BECAUSE THE EIGHT FITBIT WEARABLES DO NOT NECESSARILY
`INFRINGE AND PHILIPS HAS NOT PROVIDED SUFFICIENT EVIDENCE OF
`SPECIFIC INSTANCES OF INFRINGEMENT
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`“[T]o prove direct infringement, a patentee must either point to specific instances of direct
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`infringement or show that the accused device necessarily infringes….” ACCO, 501 F.3d at 1313
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`(citing Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1275-76 (Fed. Cir. 2004));
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`see also Toshiba, 681 F.3d at 1364 (quoting ACCO at 1313). “[I]t is not enough to simply show
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`that a product is capable of infringement; the patent owner must show evidence of specific
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`instances of direct infringement.” Fujitsu, 620 F.3d at 1329 (citing Intel Corp. v. ITC, 946 F.2d
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`821, 832 (Fed. Cir. 1991); ACCO Brands, 501 F.3d at 1313).
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`Philips ignores this controlling legal standard, and instead attempts to overwhelm the Court
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`with voluminous evidentiary cites allegedly showing Fitbit users practicing individual claim
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`5
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`Case 1:19-cv-11586-FDS Document 373 Filed 04/13/22 Page 9 of 17
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`elements, or Fitbit instructing its users to practice individual claim elements. Philips’ evidence
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`and arguments do not suggest infringement, even under Philips’ theory—i.e., Philips presents no
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`evidence that any user of the eight Fitbit wearables has ever performed all four of Dr. Martin’s
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`steps in the required order or that Fitbit instructs users to perform those steps in the required
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`order.4,5 And Philips does not dispute that the accused devices do not necessarily infringe because
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`there are various possible non-infringing uses. Thus, under controlling Federal Circuit case law,
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`summary judgment of noninfringement is appropriate.
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`Further, under the controlling cases, Philips was required to come forward with either direct
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`or circumstantial evidence that Fitbit’s users perform all of the claimed method steps in the
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`required order. At most, Philips’ cited evidence shows performance of individual method steps in
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`isolation, which is insufficient. See, e.g., E-Pass, 473 F.3d at 1223.
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`A.
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`Philips Does Not Dispute That The Eight Fitbit Wearables Do Not
`Necessarily Infringe
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`There is no dispute that the eight Fitbit wearables do not necessarily infringe, even under
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`Dr. Martin’s view. In its opening brief, Fitbit established that the eight Fitbit wearables do not
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`necessarily practice Dr. Martin’s steps 3-4, citing extensively to Fitbit’s SUF ¶¶ 9-21. (Dkt. 332
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`at 12-14 (step 3), 18-19 (step 4).) Further, Fitbit’s SUF ¶¶ 17-20 also established that the eight
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`Fitbit wearables do not necessarily practice any of Dr. Martin’s steps 1-4, because a user can
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`4 Philips wrongly claims that “Fitbit…advocates for the position that only direct evidence of a
`‘specific instance’ of a Fitbit customer infringing…can demonstrate direct infringement.” (Dkt.
`363 at 10.) Philips provides no citation because Fitbit never made that argument.
`5 Philips wrongly claims that “Fitbit does not dispute that performance of the following four steps
`[] constitutes direct infringement of the asserted claims….” (Dkt. 363 at 1 (citing Dkt. 332, SUF
`¶ 7).) But this too is false; Fitbit’s SUF ¶ 7 conspicuously begins, “Dr. Martin opines that direct
`infringement of ’377 patent claim 1 requires all of the following….” (Dkt. 332, SUF ¶ 7.) Fitbit
`never agreed with Dr. Martin’s view and in fact, disputes Dr. Martin’s view, at least for the reasons
`outlined in Fitbit’s opposition to Philips’ motion for summary judgment. (Dkt. 364.) Fitbit did
`not raise those points here because they are irrelevant to the present motion—even under Dr.
`Martin’s erroneous view of the claims, summary judgment of noninfringement is appropriate.
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`6
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`Case 1:19-cv-11586-FDS Document 373 Filed 04/13/22 Page 10 of 17
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`instead download the Fitbit app to, and couple their Fitbit wearable with, a tablet or PC. (Dkt. 332,
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`SUF ¶¶ 17-20.) And Fitbit’s SUF ¶ 21 establishes that using the eight Fitbit wearables to view a
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`user’s Cardio Fitness Score/Level on a tablet, PC, or to the face of the wearable, does not infringe.
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`(Dkt. 332, SUF ¶ 21.) Philips does not dispute any of those material facts. (Dkt. 363 at 2.)6
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`Thus, because the eight Fitbit wearables do not necessarily infringe, controlling Federal
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`Circuit case law required Philips to come forward with admissible evidence of at least one instance
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`of alleged direct infringement—i.e., evidence that a user performed all of the claim steps in the
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`required order—to defeat Fitbit’s request for summary judgment. See, e.g., ACCO Brands, 501
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`F.3d at 1313; see also Fujitsu, 620 F.3d at 1321; E-Pass, 473 F.3d 1223.
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`B.
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`Philips Does Not Provide Adequate Evidence Of Direct Infringement
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`Philips does not point to any evidence from which a reasonable juror could conclude that
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`Fitbit instructs users to perform all of Dr. Martin’s steps 1-4 in the required order or that any single
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`Fitbit user has actually performed all of Dr. Martin’s steps 1-4 in the required order.
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`1.
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`Philips’ Evidence Does Not Show That Fitbit Instructs Users To
`Perform Dr. Martin’s Steps 1-4 In The Required Order
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`As explained in Fitbit’s opening brief, binding Federal Circuit case law holds that where
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`an accused infringer provides instructions teaching certain steps of the claimed method in isolation,
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`but does not provide one instruction set teaching all steps of the claimed method in the required
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`order, that is not enough circumstantial evidence to prove infringement. See E-Pass, 473 F.3d at
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`1222 (extensive sales plus instructions teaching users to perform individual claim steps in
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`6 While Philips responds to Fitbit’s SUF ¶ 16, Philips does not dispute the facts stated therein,
`including that “Fitbit’s users can open the Fitbit application without viewing their Cardio Fitness
`Score or Cardio Fitness Level. A user’s Cardio Fitness Score and Cardio Fitness Level are not
`displayed on the homepage in the Fitbit application.” (Compare Dkt. 332, SUF ¶ 16 with Dkt. 363
`at 2.) Thus, Philips does not dispute that Dr. Martin’s step 4 is not necessarily practiced by the
`eight Fitbit wearables. (See Dkt. 332 at 18-19.)
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`7
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`Case 1:19-cv-11586-FDS Document 373 Filed 04/13/22 Page 11 of 17
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`isolation, but not entire claimed method in required order, was inadequate circumstantial evidence
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`of infringement); see also Moleculon, 793 F.2d at 1272 (two instruction sets, each teaching entire
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`infringing method, along with extensive sales, was adequate). Yet, Philips’ argument focuses
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`almost entirely on whether Fitbit teaches, and its users perform, Dr. Martin’s individual steps 1-4
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`in isolation. This is inadequate. See E-Pass, 473 F.3d at 1222.
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`For example, Philips argues that Fitbit instructs and encourages its users to practice Dr.
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`Martin’s steps 3 and 4, and that Fitbit’s users do so. (Dkt. 363 at 5-9.) Even if Philips is correct,
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`evidence regarding an individual step in isolation is not enough to overcome Fitbit’s motion. See
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`E-Pass, 473 F.3d at 1222. Further, much of Philips’ argument is overstated and incorrect.
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`With respect to Dr. Martin’s step 3, Philips claims that “the ‘Connected GPS’ feature used
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`by all but two of the Accused Wearables (Ionic and Alta HR) requires that the smartphone be
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`linked (and therefore syncing every fifteen minutes) with the Accused Wearables while the user is
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`performing a GPS Run.” (Dkt. 363 at 6.) Philips fails to mention that the Connected GPS feature
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`is optional and off by default—in order to use Connected GPS, the user must set “Allow Location
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`Access” to “Always” or “All the time” in the Fitbit app. (See, e.g., Dkt. 338-2, ¶ 158 (excerpting
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`Fitbit manual).) Dr. Martin has no idea whether any Fitbit user has done so. (Dkt. 338-1 at 230:1-
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`18.) Philips also points to “customer testimonials on Fitbit’s community forum page.” (Dkt. 363
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`at 7.) As explained in Fitbit’s opening brief, these internet message board comments are
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`inadmissible hearsay with no indication that any relevant user (1) was in the U.S., (2) used a
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`smartphone, or (3) used any of the eight Fitbit wearables. (Dkt. 332 at 15-17; see also Dkt. 367,
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`RSUF ¶ 69.) Nor do they indicate that any user went on a GPS run longer than 15 minutes as
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`8
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`Case 1:19-cv-11586-FDS Document 373 Filed 04/13/22 Page 12 of 17
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`Philips claims. (Dkt. 367, RSUF ¶ 69.) Thus, these message board comments are irrelevant.7
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`With respect to Dr. Martin’s step 4, Philips fails to mention that it may be accomplished
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`without infringing by using a tablet or PC, and Fitbit instructs users to do so. (Dkt. 332, SUF ¶¶
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`17-18, 20; see also Dkt. 367, RSUF ¶ 1.) Philips also cites to surveys (Dkt. 363 at 8), but none of
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`them suggest that any user performed Dr. Martin’s step 4 by viewing the Cardio Fitness Score
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`page on the Fitbit app on a smartphone. (Dkt. 332 at 17-18; see also Dkt. 367, RSUF ¶¶ 66-68.)
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`Philips also misleadingly claims that Fitbit’s user manuals and advertisements “focus almost
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`exclusively on the Fitbit app being used on smartphones” and “almost exclusively display the Fitbit
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`app (including the Cardio Fitness Page) on a smartphone.” (Dkt. 363 at 8-9.) But Fitbit’s manuals
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`instruct users that they may use the Fitbit application on a smartphone, tablet, or Windows 10 PC
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`(Dkt. 332, SUF ¶ 20 (undisputed); Dkt. 367, RSUF ¶ 1); Fitbit’s manuals express no preference
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`for one over the other (Dkt. 367, RSUF ¶ 1); and Fitbit’s advertisements similarly show use of
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`smartphones, tablets, and PCs without expressing or implying any preference (see, e.g., Dkt. 367,
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`RSUF ¶¶ 9, (addressing all the “advertisements” cited in Philips’ opposition here).)
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`Most notably, Philips does not point to a single Fitbit instruction set that it claims teaches
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`a Fitbit user to perform all of Dr. Martin’s steps 1-4 in the required order. Rather, Philips only
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`purports to show that Fitbit teaches Dr. Martin’s steps 1, 2, 3, and 4 in isolation. (See Dkt. 363 at
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`5-9.) Instructions teaching individual method steps in isolation are inadequate to overcome
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`summary judgment of non-infringement. See E-Pass, 473 F.3d at 1222.
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`7 Philips similarly claims that “assuming the threshold requirements are met as Fitbit intends and
`instructs, Infringement Step 3 (having a sync occur while the user is exercising) is performed
`automatically simply by exercising while wearing an Accused Wearable.” (Dkt. 363 at 6.) This
`too is an overstatement. The threshold requirements are not necessary or automatic, and even
`when they are met, a sync may not occur during exercise lasting less than 15 minutes. (See Dkt.
`332 at 13-14.)
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`9
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`Case 1:19-cv-11586-FDS Document 373 Filed 04/13/22 Page 13 of 17
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`2.
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`Philips’ Evidence Does Not Show That Any Fitbit User Has
`Performed Dr. Martin’s Steps 1-4 In The Required Order
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`Finally, Philips points to the testimony of Ryan Krems, which Fitbit already addressed.
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`(Dkt. 363 at 12-13; Dkt. 332 at 18.) Philips overstates the content of Mr. Krems testimony, and
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`Philips’ questioning of Mr. Krems was cursory and high-level, failing to confirm various key
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`details that are required for infringement, even under Dr. Martin’s overly-limited view of claim 1.
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`Most fundamentally, Mr. Krems’ testimony does not show that he has practiced all of Dr.
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`Martin’s steps 1-4 in the required order with any, much less all, of the eight Fitbit wearables. In
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`fact, Philips only claims that Mr. Krems performed Dr. Martin’s steps 3 and 4 in isolation—and
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`Philips does not even claim that he performed those steps in the required order. (See Dkt. 363 at
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`12-13.) As repeatedly explained in Fitbit’s opening brief and above, evidence that users perform
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`individual claim steps in isolation is insufficient to defeat a request for summary judgment of
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`noninfringement. See E-Pass, 473 F.3d at 1222 (extensive sales plus instructions teaching users
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`to perform individual claim steps in isolation, but not entire claimed method in required order, was
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`inadequate evidence of infringement to overcome summary judgment of noninfringement).
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`Further, Philips’ arguments are overstated even with respect to individual steps 3 and 4.
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`Philips claims that Mr. Krems’ testimony shows that he practiced Dr. Martin’s step 3 by
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`using the “All Day Sync” feature while exercising. (Dkt. 363 at 12 (citing Dkt. 338-27 at 14:14-
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`24, 43:7-45:9, 51:12-52:22, 55:7-61:12).) But this testimony does not confirm that Mr. Krems
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`actually performed Dr. Martin’s step 3—syncing data while exercising—with any of the eight
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`Fitbit wearables. Most importantly, it is undisputed that there are multiple “threshold
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`requirements” that are not necessarily performed or on by default, and that must be met in order
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`for any sync, including an “All Day Sync,” to occur; namely, the Fitbit app must be installed and
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`running on the user’s phone, the user’s phone must be connected to the Internet, the user’s phone
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`10
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`Case 1:19-cv-11586-FDS Document 373 Filed 04/13/22 Page 14 of 17
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`and Fitbit wearable must be paired and in range, and the user’s phone must have Bluetooth enabled.
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`(Dkt. 332, SUF ¶ 10; Dkt. 363 at 2 (Fitbit’s SUF ¶ 10 is undisputed).) Mr. Krems was not asked,
`
`and did not testify, that any of these threshold requirements were satisfied during any of his
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`“exercise walks.” (See Dkt. 338-27 at 14:14-24, 43:7-45:9, 51:12-52:22, 55:7-61:12).)
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`Philips also claims that Mr. Krems’ testimony shows that he practiced Dr. Martin’s step 4
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`by “using the Cardio Fitness Score Feature while using the Fitbit devices.” (Dkt. 363 at 12-13
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`(citing Dkt. 338-27 at 165:12-15).) But again, this testimony does not confirm that Mr. Krems
`
`actually performed Dr. Martin’s step 4—viewing his Cardio Fitness Score page on the Fitbit app
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`on a smartphone—with any of the eight Fitbit wearables. For example, as noted in Fitbit’s
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`opening brief, “Mr. Krems was not asked, and did not testify, that he has used the Cardio Fitness
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`Score feature on the Fitbit application on a smartphone, as required by Dr. Martin’s step 4.” (Dkt.
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`332 at 18.) Philips attempts to patch this evidentiary hole with speculation that Mr. Krems must
`
`have been using a smartphone, but Philips has no supporting evidence for that claim. (See Dkt.
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`363 at 13 n.12.) Further, as also pointed out in Fitbit’s opening brief, Philips’ questioning of Mr.
`
`Krems regarding whether he used the Cardio Fitness Score feature comprised one general question
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`and answer. (Dkt. 332 at 18 (quoting Dkt. 338-27 at 165:12-15).) This general testimony does
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`not give rise to a material factual dispute regarding whether Mr. Krems performed Dr. Martin’s
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`step 4 with each of the eight Fitbit wearables after syncing data during exercise (i.e., after
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`performing Dr. Martin’s step 3), much less that Mr. Krems performed all of Dr. Martin’s steps 1-
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`4 in the required order with each of the eight Fitbit wearables.8
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`As noted in Fitbit’s opening brief, Philips has no evidence from which a reasonable juror
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`8 In fact, Mr. Krems could not ever recall using the Alta HR or Versa Lite devices while exercising,
`as required by Dr. Martin’s step 3. (Dkt. 338-27 at 44:3-5, 45:23-46:2.) Therefore, at the very
`least, summary judgment based on Philips’ failure of proof is appropriate for those devices.
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`11
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`Case 1:19-cv-11586-FDS Document 373 Filed 04/13/22 Page 15 of 17
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`could find that any Fitbit user has ever practiced Dr. Martin’s steps 1-4 in the required order in the
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`United States with any, much less each, of the eight Fitbit wearables. (Dkt. 332.) Summary
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`judgment of noninfringement is appropriate. See Fujitsu, 620 F.3d 1321; E-Pass, 473 F.3d 1213.
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`IV.
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`PHILIPS DID NOT PRESERVE THE ALLEGATION THAT FITBIT DIRECTLY
`INFRINGES VIA TESTING, AND CANNOT DEFEAT SUMMARY JUDGMENT
`WITH THIS NEW THEORY
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`Finally, in response to Fitbit’s SUF ¶ 5, Philips claims, without citation, that it accuses
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`Fitbit of direct infringement via testing of the eight Fitbit wearables. (Dkt. 363 at 2.) Notably,
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`Philips’ contentions and expert report did not preserve this theory. (See Dkt. 270-11 (Philips’
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`second supplement infringement contentions; never mentioning testing); Dkt. 338-1 at 159:24-
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`163:2 (Dr. Martin cataloguing the infringement theories he presented; never mentioning testing);
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`see also, generally, Dkt. 338-2 (Dr. Martin’s expert report; never mentioning Fitbit testing).)
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`Philips did not preserve this theory, and thus it was waived. Philips cannot overcome summary
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`judgment with a new theory. Pernix Ir. Pain DAC v. Alvogen Malta Operations, Ltd., No. 16-139-
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`WCB, 2018 WL 2225113, 2018 U.S. Dist. LEXIS 81419, at *12-22 (D. Del. May 15, 2018)
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`(Bryson, J., by designation) (refusing to allow party to oppose summary judgment based on
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`previously undisclosed theory); see also Abiomed v. Maquet Cardiovascular, 2021 WL 4477432,
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`*8 (D. Mass. Sept. 30, 2021) (Saylor, J.) (refusing to consider motion for summary judgment based
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`on previously undisclosed t